New Year, New Fee Schedule for Trademarks at the USPTO – Big Changes to Application Fees

Disclaimer: This alert originates from Womble Bond Dickinson (US). Effective January 1, 2025, Lewis Roca and Womble Bond Dickinson (US) will combine and officially operate as Womble Bond Dickinson (US). View the original alert here.

Our colleagues previously reported on the United States Patent and Trademark Office’s (USPTO) patent fee schedule for 2025, and we now take this opportunity to provide you with our insights on the USPTO trademark fee schedule for 2025.  The Final Rule with updated fee schedule will go into effect on January 18, 2025.

While there will be some slight increases to post registration maintenance fees, Amendment to Allege Use and Statement of Use fees, petition fees, and Letter of Protest fees, a major change is coming to the structure and fees for filing an application.

The USPTO is doing away with two different types of applications (TEAS Plus at a reduced fee and TEAS Standard), opting for a single base application for trademarks filed under Trademark Act Sections 1 (intent to use and use based) and 44 (foreign application/registration based).  The base application fee will be $350, the same as a current TEAS Standard application, however:

While this initially does not sound like much of a change, take note of the new name - base application.  Just like a base car model if you want add-ons you are going to pay more.  With the debut of the base application, the USPTO is “introducing additional fees for applications that are incomplete or contain custom identifications of goods or services.”  Some (but not all) of those fees are:

• $200 per class charge to use the free-form text box to describe/identify the goods and services, instead of those specific IDs approved by the USPTO as located in the Trademark ID Manual.
• $200 per affected class charge for every 1000 characters in the goods/services descriptions beyond the first 1000 characters
• $100 per class charge for insufficient information such as filing an application without:
  • The required declaration (unsigned);
  • A translation of any non-English terms;
  • A description of a stylized/design mark;
  • A transliteration of any non-Latin characters;
  • A claim ownership of prior registrations
  • A U.S. attorney designated (if the applicant is domiciled outside of the U.S.)
     
• Applicants will no longer be able to delay including information that was routinely addressed during examination.
• Will now also need to try to minimize their goods/services descriptions and use the IDs included in the Trademark ID Manual, or else incur additional fees.
• Applicants filing under Section 44(d) will no longer be able to use the same goods and services description identified in the home registration without incurring additional fees.

Those most likely to be impacted are applicants with new technology that may not fit within the scope of the goods and services listed in the Trademark ID Manual, and foreign applicants who will need to reconsider their U.S. goods and services descriptions, unless they are filing a Madrid Application (discussed below).

We have all seen Examiners pushing for amendments in line with the Trademark ID Manual in Office Actions. Under the new base model Examiner’s recommendations will become requirements (unless you are willing to pay additional fees).

Given the pivot to a base application model for Sections 1 and 44 applications, we are likely to see a sizable increase in suggestions to the Trademark ID Manual.  Fortunately, that is an option for applicants that cannot find an accepted term for their goods and services. In other words, an applicant can send one in and hope it gets published (like a Letter to the Editor).  Right now, a response to a request for a particular ID (accepted, rejected, or accepted in modified form) is provided within 1-2 business days and, if accepted, the new ID generally appears in the next available weekly update of the Trademark ID Manual.  It will be interesting to see if this process becomes delayed as requests likely increase.

This base application model is only for Sections 1 and 44 applications, not Section 66(a) (Madrid) applications as the World Intellectual Property Organization (WIPO) is currently unable to collect additional fees before recording a 66(a) application. Thus, the base filing and additional fee system will not apply.  While appreciating that the USPTO is likely trying to curtail long and unruly descriptions of goods and services and thus make examination more efficient, this change will not apply to Section 66(a) applications which, ironically, are applications most likely to have insufficient information, non-acceptable and long IDs. The fee for Section 66(a) applications is going up just $100 per class (from $500 to $600).

Additional fee increases effective as of January 18, 2025 are:

• The fee for filing an Amendment to Allege Use or a Statement of Use will increase to $150.00 (a $50.00 increase);
• The fee for filing a Section 8 Declaration, required to maintain federal registrations will increase to $325.00 per class (a $100.00 increase);
• The fee for filing an optional Section 15 Declaration of Incontestability will increase to $250.00 per class (a $50.00 increase)
• The fee to electronically file a Section 9 Renewal Application (every ten years) will increase to $325.00 per class (a $25.00) increase;
• A Letter of Protest (filed by third parties to alert the USPTO as to why a particular application should be refused) will increase to $150.00 (a $100.00 increase);
• As for petitions, the fee for a Petition to Revive to reinstate an application will increase to $350.00 (up from $250.00) and a Petition to the Director, for any number of requests will now cost $400, an increase of $150.00)

These new fees are designed to strongly encourage applicants to use the resources the USPTO provides, namely, the thousands of pre-approved IDs, to be cautious and mindful when defining their goods and services (and to pay attention to that word count), and ensure their applications are complete with all information required by the USPTO for registration.  The more precise and streamlined the IDs and complete the application details, the greater the likelihood that your application will be approved (unless a substantive refusal arises) with little or no objection and, the lower the cost.